Author: Erikas Saukalas, associated partner at METIDA, attorney-at-law, Head of International Relations Division

Certain requirements must be met for a mark to be registered as a Community trademark (CTM). According to one of them, the mark cannot consist exclusively of the shape of goods which is necessary to obtain a technical result. Recently, the Court of Justice of the European Union (CJEU) has examined a few cases, where the decision not to register a mark was based by the absolute grounds of refusal.

Both Three and two-Dimensional Marks are Affected by the Regulation

Yoshida Metal Industry Co Ltd filed an application to register a two-dimensional sign depicting a knife handle (illustrated below) in connection to goods of classes 8 and 21, which include a relatively broad range of tools.

Since the mark consisted of the shape which results of the nature of goods themseleves, its proprietor failed to argue that they attempted to register the geometric figure and the pattern made from dots, rather than the shape of goods.

This dispute lead to a discussion whether the requirement regarding the shape of goods is applied only to the three-dimensional or also to the two-dimensional marks, also, whether the OHIM should rely only on the information that is supplied in the application or also on the one that is presented later whilst assessing mark’s registrability.

The CJEU held that Council Regulation’s article (7e) is applied to two-dimensional marks too, as this prevents its proprietors from exclusively taking advantage of the technical functions it performs.

Preventing from Monopolisation

Likewise, in another case, known as LEGO, there was an attempt to revoke the registration of one of the LEGO Juris A/S trademarks (LEGO block’s 3D image) on the grounds that the sign consisted of the shape of goods, which was necessary to obtain a technical result. Interested parties argued that the block’s 3D image could not be registered as a trademark, because it would immediately prevent other producers from competing, resulting in monopolisation of the entire market.

The CJEU held that each case must be considered on an individual basis taking into account the overall mark’s image, surveys, experts’ opinions and other information that would help to determine whether the mark exclusively consists of the shape of the goods which is necessary to obtain a technical result. Also, all cases should be analysed in light of the trademark law regulations that block the registration of the marks similar to the ones discussed above. Besides, whilst examining the invalidity of the mark, it should be noted that the existing patent covering the shape of goods cannot alone imply that the mark exclusively consists of the shape of goods. Yet, this can help prove that the trademark consists of the shape of goods necessary to obtain a technical result.

Hence, in order to avoid monopolisation in various fields, the applicants cannot be allowed to register the trademark depicting the shape of goods which performs a technical function. Furthermore, if these type of marks have been registered, their registration has to be revoked. One of the stronger arguments proving the invalidity of such trademarks could be an existing patent representing an identical functional shape of goods.